Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  May 08, 2020

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On April 29, 2020, the examining attorney and the applicant’s attorney, Kazuyo Morita discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

• Identification of Goods – Amendment Required
• Multiple Class Application Requirements
• Option to Delete a Filing Basis

 

IDENTIFICATION OF GOODS – AMENDMENT REQUIRED

 

Applicant must clarify the wording “gel-type cooling pads or patches for absorbing and radiating sudden heat in the human body for medical purposes,” “covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body,” “heating and cooling packs administered chemical substances that react when required to warm or cool the body for medical purposes,” “adhesive sheets for medical purposes used to apply heating and cooling packs administered chemical substances that react when required to warm or cool the body” in the identification of goods in International Class 10 because it is indefinite and/or too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are. Applicant must further specify the nature of the goods. Further this wording could identify goods in more than one international class. For example, paper covers can be classified in International Class 16 and medicated adhesive sheets would be classified in International Class 5.

 

Applicant must clarify the wording “thunder sticks,” “game apparatus, namely, paddles, rackets, bats, nets, bladders, balls and protectors for playing indoor and outdoor games,” “athletic tape,” and “protective paddings for playing sports” in the identification of goods in International Class 28 because it is indefinite and/or too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are. Applicant must further specify the goods. Further, this wording could identify goods in more than one international class.  For example, “athletic tape,” also called “kinesiology tape,” is stretchy tape applied to the body to support muscles and tissues, used to treat and prevent injury, strain, inflammation, and pain is in International Class 10 and “athletic sporting goods, namely, adhesive tape for hockey stick and uniform support” is in International Class 28. 

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant may substitute the following wording, if accurate: 

 

Class 10: Medical apparatus and instruments for transdermal drug administration system, namely, micro needles assembled on an adhesive patch sold without medication; heating pads for medical purposes; gel-type cooling pads and patches for absorbing and radiating sudden heat in the human body for medical purposes; thermotherapy apparatus for medical purposes; heating and cooling packs filled with chemical substances that react when required to warm or cool the body for medical purposes; fitted covers for medical use to support heating and cooling packs filled with chemical substances that react when required to warm or cool the body; chemically activated heating and cooling packs administered chemical substances that react when required to warm or cool the body for medical purposes; non-medicated adhesive paper sheets for medical purposes used to apply chemically activated heating and cooling packs administered chemical substances that react when required to warm or cool the body; ice bags for medical purposes; ice bag pillows for medical purposes; supportive bandages; kinesiology tapes

 

Class 28: Toy noisemaker; inflatable balloon cheering sticks; toy noisemakers, namely, thunder sticks; dolls; toy figures; playing cards; play balls and play balloons; game apparatus, namely, table tennis paddles, rackets, bats, nets for sports, bladders of balls, balls and abdomen protectors for athletic use, all of the foregoing for playing indoor and outdoor games; golf clubs; golf bags; golf gloves; athletic adhesive tape for hockey stick and uniform support; knee guards, elbow guards, and wrist guards for athletic use; protective paddings for playing football and baseball; athletic supporters

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 2 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

OPTION TO DELETE A BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

How to respond.  Click to file a response to this nonfinal Office action.

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Sarah E. Steinpfad/

Sarah E. Steinpfad

Trademark Examining Attorney

Law Office 120

571-270-3089

Sarah.steinpfad@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 08, 2020 for

U.S. Trademark Application Serial No. 88810653

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Sarah E. Steinpfad/

Sarah E. Steinpfad

Trademark Examining Attorney

Law Office 120

571-270-3089

Sarah.steinpfad@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 08, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”